DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The disclosure is objected to because of the following informalities: On page 1, in paragraph 0001, line 2: “XX,XXX,XXX” should be changed to --12,295,894--.
Appropriate correction is required.
Claim Objections
Claims 7 and 9 are objected to because of the following informalities:
1) In claim 7, line 2: Both instances of the term “first” should be changed to
--second--.
2) In claim 9, line 2: The term --the-- should be inserted before the term “boot”.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 10-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,295,894. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 and 10-18 are generic to all that is recited in claims 1-19 of U.S. Patent No. 12,295,894. In other words, claims 1-19 of U.S. Patent No. 12,295,894 fully encompass the subject matter of claims 1-8 and 10-18 and therefore anticipate claims 1-8 and 10-18. Since claims 1-8 and 10-18 are anticipated by claims 1-19 of the patent, they are not patentably distinct from claims 1-19. Thus the invention of claims 1-19 of the patent is in effect a “species” of the “generic” invention of claims 1-8 and 10-18. It has been held that the generic invention is anticipated by the
species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-8 and 10-18 are anticipated (fully encompassed) by claims 1-19 of the patent, claims 1-8 and 10-18 are not patentably distinct from claims 1-19, regardless of any additional subject matter present in claims 1-19.
Claims 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,295,894 in view of U.S. Patent Application Publication No. 2007/0161935 to Torrie et al. Claims 1-19 of U.S. Patent No. 12,295,894 do not specifically disclose the use of a mount attached to an underside of the sole portion, the mount being configured to lock the boot shell to a hip distractor; and wherein the mount includes a release input that is movable to unlock the boot shell from the hip distractor to permit the surgical boot apparatus to be detached from the hip distractor. Torrie et al. ‘935 provides the basic teaching of a surgical boot apparatus comprising a boot shell (180) having a sole portion (112), and a mount (110, 114) attached to an underside of the sole portion, the mount being configured to lock the boot shell (180) to a hip distractor (102), and wherein the mount (110, 114) includes a release input (154a, 154b) that is movable to unlock the boot shell from the hip distractor (102) to permit the surgical boot apparatus to be detached from the hip distractor (as shown in Figures 1-5, 7 & 8 and as described on page 2, in paragraphs 0036, 0037, 0039 & 0040). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the surgical boot apparatus disclosed in claims 1-19 of U.S. Patent No. 12,295,894 with the mount and release input taught in Torrie et al. ‘935 with a
reasonable expectation of success because this would have achieved the desirable result of “[permitting] operating room personnel to reposition [a] patient…without needing to access [a] draped pelvis/thigh region [of the patient]” as taught by Torrie et al. ‘935 (page 2, paragraphs 0036 & 0037).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 7,802,808 to Neiley. Neiley ‘808 shows the claimed limitations of a surgical boot apparatus (100) for use in surgery involving hip distraction, the surgical boot apparatus comprising a boot shell having a sole portion (105) configured for placement adjacent a sole of a foot of a patient and a calf portion (115) configured for placement adjacent a calf of the patient, four
ladder straps (145, 150) coupled to the boot shell, the four ladder straps including a first medial strap (145), a first lateral strap (145), a second medial strap (150), and a second lateral strap (150), and an instep pad (130) having four ratchet buckles (160, 165) to interface with the respective ladder straps (145, 150), wherein the ratchet buckles are operable to tighten the instep pad (130) against the patient's leg when the patient's leg is situated within the boot shell, and wherein the ratchet buckles (160, 165) are movable to a released state to permit the instep pad (130) to be completely detached from the four ladder straps (145, 150) (as shown in Figures 1-6C and as described in column 1, lines 39-46 & 63-66; column 2, lines 44-56; column 3, lines 46-58 & 65-67 and in column 4, lines 1-14).
With respect to claims 2-4, the reference further discloses a condition wherein the ladder straps of the first medial strap (145), the second medial strap (150), the first lateral strap (145), and the second lateral strap (150) are of substantially equivalent lengths (i.e., due to instep pad not appearing bent or flexed more to one medial or lateral side as shown in Figure 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Neiley ‘808. Neiley ‘808 does not specifically disclose a condition wherein each ladder strap (145, 150) has a proximal end that is pinned to the boot shell to permit each ladder strap to rotate relative to the boot shell about a respective pivot axis. However, Neiley ‘808 discloses wherein each of the proximal ends of ladder straps 150 are attached to the sole portion 105 of the boot shell at a primary attachment location 155 which is also a rotatable connection point (as shown in Figure 1 and as described in column 3, lines 59-62 and in column 4, lines 27-32). Accordingly, the skilled artisan would have found it obvious before the effective filing date of the claimed invention to provide the surgical boot apparatus of Neiley ‘808 with a plurality of ladder straps wherein each ladder strap has a proximal end that is pinned to the boot shell to permit each ladder strap to rotate relative to the boot shell about a respective pivot axis since it has been held that mere duplication of the essential working parts of a device (in this case, providing additional rotatable attachment points for the each of the proximal ends of ladder straps 145) involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8), and because providing rotatable connection points for each of the ladder straps would also facilitate
placement of the boot shell about the foot of a user as taught by Neiley ‘808 (see column 4, lines 32-36).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. U.S. Patent Application Publication No. 2025/0255765 is the patent application publication for this case, whereas U.S. Patent Application Publication No. 2007/0265635 to Torrie et al. discloses the use of a surgical boot apparatus comprising a boot shell and a mount which is configured to lock the boot shell to a hip distractor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT G SANTOS whose telephone number is (571)272-7048. The examiner can normally be reached Monday-Friday 9am-11:30am and 2pm-7:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justin C Mikowski can be reached at 571-272-8525. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT G SANTOS/Primary Examiner, Art Unit 3673
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